Playboy Enterprises International, Inc. v. Good Samaritan Program

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Playboy

Enterprises International, Inc. v. Good Samaritan Program

Case No.

D2001-0241

1. The Parties

Complainant is Playboy

Enterprises International, Inc., a Delaware corporation with its principal

place of business in Chicago, Illinois, U.S.A. (Playboy).

Respondent is Good

Samaritan Program, with an address at 9722 Groffs Mill Dr., Owings Mills,

MD 21117, U.S.A (Good Samaritan).

2. Domain Name and

Registrar

The domain name in

issue is <hughhefner.com>.

The registrar is BulkRegister.com,

7 East Redwood Street, Third Floor, Baltimore, MD 21202 U.S.A. (BulkRegister).

3. Procedural

History

The WIPO Arbitration

and Mediation Center (the Center) received Playboy’s complaint via email

on February 14, 2001, and in hard copy on February 16, 2001. The Center

verified that the complaint satisfies the formal requirements of the ICANN

Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for

Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental

Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental

Rules). Playboy made the required payment to the Center. The formal date

of the commencement of this administrative proceeding is February 20, 2001.

On February 19, 2001,

the Center transmitted via email to BulkRegister a request for registrar

verification in connection with this case. On February 19, 2001, BulkRegister

transmitted via email to the Center BulkRegister’s confirmation that (1)

Good Samaritan is the registrant of the domain name in issue, (2) the Policy

applies to the domain name, and (3) the current status of the domain name

is "Register LOCK".

On February 20, 2001,

the Center transmitted Notification of Complaint and Commencement of the

Administrative Proceeding, together with a copy of the Complaint, via facsimile

to Good Samaritan via email and post/courier. The Center advised that the

response was due by March 11, 2001, pointed out the response should be in

accordance with specified rules, and described the consequences of a default

if the response was not sent by March 11, 2001.

On March 13, 2001,

the Center transmitted via email to Good Samaritan Notification of Respondent

Default, advising Good Samaritan inter alia (1) it had failed to comply

with the deadline for submissions of a response, (2) the Center would proceed

with the appointment of an Administrative Panel, (3) the Panel would decide

in its discretion whether to consider a response if one were to be submitted

later.

On April 2, 2001, the

Center advised the parties via email of the appointment of

David W. Plant as Presiding

Panelist and Frederick M. Abbott and Peter L. Michaelson as Panelists, and

that the decision was due April 15, 2001.

On April 25, 2001 the

Center advised the parties via email that the decision due date had been

postponed by the Presiding Panelist to May 18, 2001. On April 30, 2001,

in response to an inquiry from Playboy’s counsel, the Center advised the

parties via email that the postponement was due to the schedule of the Presiding

Panelist.

4. Factual Background;

Parties’ Contentions

a. The Trademark

The complaint is based

on the mark HUGH M. HEFNER.

Playboy avers that it is

"a worldwide provider of adult lifestyle entertainment" through a

wide variety of media, including the Internet. (Footnote

1) The famous Playboy magazine, read by nine million readers per

month, was created by Playboy’s founder, Hugh M. Hefner (Hefner). Playboy avers

Hefner "was the living embodiment of the lifestyle his magazine celebrated."

Hefner is Playboy’s Editor-in Chief, has been a TV personality, has received

a publishing award and is in the Hall of Fame of American Society of Magazine

Editors.

Playboy avers Hefner "remains

one of the most popular media and entertainment figures in the world."

For example, "entering the search query ‘Hugh Hefner’ in the Google.com

search engine resulted in a return of more than 20,000 relevant references."(Footnote

2)

Playboy avers that

Hefner has granted Playboy "permission to use his name to identify

a line of high quality tobacco related products ... ." Since 1996,

Playboy and its predecessors have allegedly used HUGH M. HEFNER "in

signature form in the United States and beyond to identify premium cigars."

Playboy has registered

HUGH M. HEFNER (signature) on the Principal Register in the United States

Patent and Trademark Office (USPTO). A copy of the October 21, 1997 Registration

No. 2,107,308 is Exhibit 1 to the Kaiser declaration. As tabulated at Exhibit

2 to the Kaiser declaration, Playboy has registered HUGH M. HEFNER in more

than 40 jurisdictions around the world.

In sum, Playboy avers

it "owns valid and enforceable trademark rights in and to its mark."

b. The Complaint

Re Respondents’ Activities

Playboy avers that

all three elements of Policy 4.(a) are met because:

1. the domain

name in issue is identical or confusingly similar to a mark in which

Playboy has rights,

2. Good Samaritan

has no rights or legitimate interests in the domain name; and

3. the domain

name was registered and is being used in bad faith by Good Samaritan.

Good Samaritan registered

the domain name <hughhefner.com> with BulkRegister on September 12,

1998. Playboy avers that currently, when the domain name is entered,

"the user is

automatically redirected to http://www.instealthmode.com/inactive. Thus,

[Good Samaritan] is currently using the domain name to host a Web site

which states ‘This Domain Is Inactive. For further information, please

e-mail us.’ The site then contains a link that opens an e-mail window

and allows an Internet user to send an e-mail to [Good Samaritan]."

A copy of the Good

Samaritan site appears at Exhibit 3 to the Kaiser declaration.

Playboy avers that

until recently Good Samaritan maintained a Web site entitled "DreamSeller

Good Samaritan Program" under the domain name <goodsamaritanprogram.com>.

A copy of pages from that web site appear at Exhibit 4 to the Kaiser declaration.

Playboy avers the domain name currently redirects users to the Internet

under the domain name <instealthmode.com>, the same domain name as

in the current web site, and whose owner has the same address as Good Samaritan.

According to this recent Good Samaritan site, Good Samaritan is "dedicated

to fighting domain name piracy." However, Playboy avers that Good Samaritan

is "every bit as much a cybersquatter as the pirates it castigates."

The recent site refers

to Good Samaritan, DreamSeller and The Dream Factory. Playboy avers they

are all the same entity. Playboy quotes from the <thedreamfactory.com>

web site:

"The Dream Factory

is a wholly-owned division of DreamSeller responsible for developing next-generation

products, services and businesses. ... Many of our projects have launched

and continue to operate ‘in stealth mode’ (confidential) and there are more

‘dreams’ to be dreamt."

Playboy quotes further

from the web site:

"We target many

industries by staying focused on subjects that we have an active/direct

interest in."

Playboy notes the first

subject on the list of those Good Samaritan has an interest in is "celebrities".

Playboy points out that Good Samaritan (1) owns the domain name <celebritychannel.com>

and (2) states it has "previously registered" domain names <donaldtrump.com>,

<cindycrawford.com>, <brucewillis.com>, etc. (Footnote

3)

Playboy asserts that Good

Samaritan registers celebrity domain names for the purpose of attracting celebrities

and general Internet traffic to Good Samaritan’s sites "so that it can

promote its goods and services to these individuals and solicit investments

in [Good Samaritan’s] ventures from them."(Footnote

4)

Playboy avers that

upon discovering the domain name in issue, Playboy sent to Good Samaritan

an email, on February 10, 2000, demanding that Good Samaritan transfer the

domain name to Playboy.

A copy of the email

is Exhibit 10 to the Kaisser declaration. Playboy asserts that Good Samaritan

failed to respond, and accordingly, Playboy sent follow-up letters by email

and registered mail (copies at Exhibit 11 to the Kaiser declaration). As

shown in Exhibit 11, a representative of Good Samaritan signed for the two

copies sent by registered mail. Playboy asserts Good Samaritan never responded.

Playboy contends that

it acquired its trademark rights "well prior" to the date Good

Samaritan registered the domain name in issue. Playboy asserts that the

second-level portion of the domain name is confusingly similar to Playboy’s

HUGH M. HEFNER mark, and is "plainly intended" by Good Samaritan

to be confusingly similar to Hefner’s name and Playboy’s mark.

Playboy asserts it

has no connection with Good Samaritan and has never licensed or consented

to Good Samaritan’s use of the domain name in issue. Playboy contends that

Good Samaritan’s "recognition of the evils" of cyberpiracy, and

its public representations that it registers domain names to "save"

them from cyberpirates, are virtual admissions by Good Samaritan that it

has no rights or legitimate interests in the domain name in issue.

Playboy contends that three

of the four illustrative circumstances set out in Policy Paragraph 4.(b) exist

in this situation and show that Good Samaritan has registered and used the domain

name in bad faith.(Footnote 5)

Playboy turns first

to Paragraphs 4.(b)(i) and (iv). Playboy contends that Good Samaritan has

registered and is using the domain name to profit from misdirected Internet

traffic. Playboy urges that Good Samaritan (1) must have known of the HUGH

M. HEFNER mark when it registered the domain name, and (2) admits that it

intentionally registers celebrity names -- purportedly to save them, but

in reality to assure Good Samaritan "first position" when it comes

to cybersquatting on the celebrities’ names. Playboy notes that even if

Good Samaritan were to claim ignorance of the mark, Playboy’s USPTO registration

constitutes constructive notice of Playboy’s rights under U.S. law. Playboy

asserts that Internet users interested in news about Hefner are "certain"

to look for such news and information under the domain name <hughhefner.com>.

Further, Good Samaritan is allegedly misdirecting such users to a site which

encourages the users to contact Good Samaritan, and after such contact is

made, Good Samaritan has the opportunity to promote its own services and

to solicit investments. Playboy cites WIPO decisions at D2000-0847, D2000-0210

and D2000-0794 to support the assertion that, in similar situations where

no plausible explanation exists for adopting a domain name corresponding

to the name of a famous entertainer, other Panels have found a violation

of the Policy.

Playboy contends that

Good Samaritan has violated Paragraph 4.(b)(ii) because Good Samaritan registered

the domain name to block Playboy from owning the domain name without dealing

with Good Samaritan first -- to Good Samaritan’s commercial advantage. Good

Samaritan’s website "indicates it has engaged in the same conduct with

numerous other celebrity names," citing those names referred to supra.

Playboy requests that

the domain name in issue be transferred to Playboy.

The complaint concludes

with the requisite certification, signed by counsel, that the information

in the complaint is complete and accurate.

c. The Default

In light of Good Samaritan’s

failure to respond, the Panel has elected to decide this dispute based upon

the complaint. Rules, Paragraphs 5.(e) and 14.(a).

5. Discussion and

Findings

Paragraph 4.(a) of

the Policy directs that Playboy must prove, with respect to the domain name

in issue, each of the following:

(i) The domain

name in issue is identical or confusingly similar to a mark in which

Playboy has rights, and

(ii) Good

Samaritan has no rights or legitimate interests in respect of the

domain name, and

(iii) The

domain name has been registered and is being used in bad faith.

Paragraph 4.(b) of

the Policy sets out four illustrative circumstances, any one of which for

purposes of Paragraph 4.(a)(iii) above, if proved by a complainant, shall

be evidence of a respondent’s registration and use of a domain name in bad

faith.

Paragraph 4.(c) of

the Policy sets out three illustrative circumstances any one of which, if

proved by respondent, shall demonstrate respondent’s rights or legitimate

interests to the domain name for purposes of Paragraph 4.(a)(ii) above.

a. Preliminary Observations

The Panel has assured

itself that, in light of the various communications from the Center to Good

Samaritan, the parties have been treated with equality and Good Samaritan

has been given a fair opportunity to present its case. Rules, Paragraph

10.(b). Accordingly, in the Panel’s view, Good Samaritan has been afforded

due process.

b. Identity or Confusing

Similarity

Playboy has the burden

of proving this element and each of the other two elements of Paragraph

4.(a) of the Policy. It is especially important in a default situation that

a complainant meet its burden of proof.

Playboy contends that

its mark and Good Samaritan’s domain name are confusingly similar. Playboy

points to Good Samaritan’s own statements that its practice has been to

acquire celebrity domain names. The domain name in issue is clearly a celebrity

domain name associated with the well known creator of and emissary for Playboy

magazine.

Playboy’s stylized

word mark, HUGH M. HEFNER, is used without its stylized elements in the

disputed domain name. The elimination of the stylized elements is dictated

by technical limitations of the domain name system. Because of the close

association between the HUGH M. HEFNER signature and the persona of Hefner,

it is clear that Internet users viewing the <hughhefner.com> domain

name will associate it with Hefner. It is plain on this record that the

mark and the domain name are confusingly similar, and indeed, that such

confusion must have been intended.

Playboy has carried

its burden on this element of Paragragph 4.(a).

c. Rights or Legitimate

Interests

Playboy has demonstrated

with competent evidence (1) Playboy’s ownership of the HUGH M. HEFNER mark,

(2) the validity of the mark, (3) value of the mark to Playboy, (4) Playboy’s

continuous use of the mark since at least July 1996 -- before Good Samaritan

registered the domain name, (5) the notice and acclaim associated with the

mark, and (4) the lack of any right or interest in the mark or the domain

name on the part of Good Samaritan. Good Samaritan’s self-anointment as

a private attorney general to police the Internet for celebrities falls

far short of imbuing Good Samaritan with any right or interest in the HUGH

M. HEFNER mark.

The Panel finds that

Playboy has met its burden of proof on the second element of Paragraph 4.(a).

d. Registration

and Use in Bad Faith

In appropriate circumstances,

bad faith registration and use of a contested domain name can be inferred

from circumstantial evidence. Both registration in bad faith and use in

bad faith must be proved by Playboy. The Panel finds that Playboy has proven

that Good Samaritan’s conduct evidences bad faith registration and use under

Paragraphs 4.(b)(i) and (iv).

With regard to Paragraph

4.(b)(i), although the consideration Good Samaritan solicits for transfer of

domain names back to celebrities may (or may not) involve direct cash payment,

it appears from Good Samaritan’s own statements that it is seeking substantial

consideration in the form of celebrity endorsement or linkage to successful

commercial web sites in return for its services.(Footnote

6) The Panel concludes that Good Samaritan registered <hughhefner.com>

for the purpose of transferring it to Playboy in return for valuable consideration

in excess of its costs directly related to the domain name.

With regard to Paragraph

4.(b)(iv), it is beyond any dispute that Good Samaritan has used the domain

name intentionally to attract for commercial gain Internet users to Good

Samaritan’s web site by creating a likelihood of confusion with Playboy’s

mark

HUGH M. HEFNER. Good Samaritan

has not hesitated to announce its reliance on numerous celebrity domain names

as bait to conduct its business, i.e. to link its "clients" to its

homepage, just as it has linked visitors to its <hughhefner.com> site

to its homepage.

6. Decision

In light of the findings

by the Panel, the Panel decides that Playboy has met its burden of proof

with respect to each of the three elements of Policy, Paragraph 4.(a). Accordingly,

the Panel requires that the registration Good Samaritan’s <hughhefner.com>

domain name be transferred to Playboy.

David W

Plant

Presiding Panelist

Frederick

M. Abbott

Panelist

Peter L.

Michaelson

Panelist

Dated: May

17, 2001

Footnotes:

Playboy asserts that

facts averred in its complaint are verified by the Declaration of Michelle

A. Kaiser, Annex C to the complaint. Ms. Kaiser is Senior Intellectual Property

Counsel for Playboy. (back to text)

Playboy cites the declaration

of Amy B. Miner, one of its counsel in this matter, in support of this averment.

That declaration is at Annex D to the complaint. (back to text)

In point of fact, the

web site states (Exhibit 4 to the Kaiser declaration) those domain names "have

been returned to their rightful owners." It is not clear that Good Samaritan

registered those domain names, although the site does state "we try to

rescue/secure the names if they are available." (back to

text)

The recent web site,

at Exhibit 4 to the Kaiser declaration, purports to "help celebrities

recover their domain names, whether they chose to use the name or not."

The web site notes that sometimes celebrities "can get their domain names

back by buying them for $50,000 - $1,000,000+ or by contributing to the current

owners favorite charities," states "Our team works hard to rescue

and secure domain names for their rightful owners," reports "we

have 142 names on our ‘Hit List’ and the list grows every day," and declares

"we choose not to reveal how we do what we do. Keeping our strategy secret

is vital to our success." Good Samaritan’s site refers also to a "Domain

Vault" which, when this section of the site is completed, "will

list the many domain names we have secured/rescued that are waiting to be

reunited with their rightful owners." Good Samaritan states it does not

charge for its service: "We do it for selected clients and usually ask

that they return the favor by linking back to the GSP [Good Samaritan Program]

homepage and sending us a thank you letter for our archives." (back

to text)

Playboy mistakenly refers

to Paragraph 4.(c) in connection with these contentions. The relevant paragraph

is Paragraph 4.(b). Playboy accurately quotes in full from Paragraphs 4.(b)(i),

(ii), and (iv). (back to text)

"We do it for

selected clients and usually ask that they return the favor by linking back

to the GSP [Good Samaritan Program] homepage and sending us a thank you letter

for our archives." Exhibit 4 to Kaiser declaration, supra, footnote 4.

(back to text)

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